Trademark Office Actions involving issues with the identification of goods/services can vary in complexity.
Simple amendments to an identification of goods/services to clarify the nature of the goods/services are typically not overly complex (provided you did not file an application containing an extensive laundry list of goods/services).
Sometimes an additional fee may be required if your application misclassified goods/services in the wrong class. Government filing fees are due for each trademark class that your goods/services cover — so, for example, if you filed an application listing t-shirts and handbags and paid for only a single class application, you can expect to receive an Office Action requiring that you either drop one of the items from the application, or pay an additional fee to add another trademark class. This is because t-shirts fall in Class 25 and handbags fall in Class 18.
You are allowed to narrow your identification of goods/services after your application is filed but you can never broaden the scope of the goods/services after the application is filed. If you’ve already filed an application and wish to cover goods/services that are broader than the goods/services listed in your initial application, you would need to file a new application (which can be for the same trademark, just covering the different or broader goods/services).
Another issue that can arise with the identification of goods/services is if the Applicant mistakenly filed for goods when they are actually offering services (or vice versa). By hiring an experienced trademark attorney to assist with your trademark filing, you can help prevent these types of mistakes.
Tip: By finding descriptions for your goods/services in the Trademark ID Manual, you can (1) be sure that (the descriptions you select are descriptions that the United States Patent & Trademark Office (USPTO) has pre-approved and (2) save $100 per class by qualifying for a reduced government filing fee.
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